Trade mark – Infringement – Defendant can use descriptive Hindi word to describe their products therefore by use of descriptive word ‘SWAAD’ there is no deception by defendant nor has not been used as a Trade mark . Injunction application dismissed.

MIPR 2018 (1) 0057= MANU/DE/3430/2017

 

      IN THE HIGH COURT OF DELHI

 

Jain Riceland Pvt. Ltd.

vs

Sagar Overseas

CS (COMM.) 796/2016 DECIDED ON: 30.10.2017

Judge

Mukta Gupta, J.

Counsel

For Appellant/Petitioner/Plaintiff: Mohan Vidhani and Ashish Singh, Advs. For Respondents/Defendant: Hi tender Kapur and Sagar Chawla, Advs.

Cases referred

Bhole Baba Milk Food Industries v. Parul food Specialties Pvt. Ltd. MANU/DE/4050/ 2011:186 (2012) DLT 234: 2011 (48) PTC 235 (Del) (

Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. and Ors.
MANU/DE/2282/2009: 2009 (41) PTC 336 (Del): 2009 (8) AD (Delhi) 350: (2010)
ILR 2 Delhi 85: MIPR 2009 (3) 108

Coolways India v. Princo Air Conditioning and Refrigeration 1992 PTC (Suppl) (1) 470
(Del)

Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd. MANU/SC/0541/
2004: (2004) 5 SCC 257: (2005) 123 CompCas 334 (SC): 2005 (30) PTC 1 (SC)
Heinz Italia and Am. v. Dabur India Ltd. MANU/SC/2133/2007: (2007) 6 SCC 1:: 2007
(4) ALLMR (SC) 777:2007 (68) ALR 658:2007 (5) ALT 41 (SC): 2007 (3) AWC 3155
(SC): 104 (2007) CLT 719: 2007 (4) CTC 810: 2007 (6) MhLJ 7: MIPR 2007 (2) 193:
2007 (35) PTC 1 (SC): 2007 (3) RCR (Civil) 365: 2007 (3) RCR (Criminal) 290: 2007
(7) SCALE 608

M/s. EM. Diesels Ltd. v. M/s. S.M. Diesels 1993 PTC 75

Marico Limited v. Agro Tech Foods Ltd. MANU/DE/3131/2010:174 (2010) DLT 279:
ILR (2010) Supp. (3) Delhi 402: MIPR 2010 (3) 226: 2010 (44) PTC 736 (Del)
N.R. Dongre v. Whirlpool Corp. MANU/DE/0700/1995:1995 (34) DRJ109: AIR 1995 Delhi 300: (1996) ILR 1 Delhi 333:1996 (16) PTC 476 (Del)

 

 

Code of Civil Procedure, 1908

Order XXXIX Rule 1                                                                         

Order XXXIX Rule 2

 

 

Order XXXIX Rule 4 Copyright Act, 1957 Trade marks Act, 1999

Section 2(zb)

Section 2(zg)

Section 9

Section 9(l)(a)

Section 9(l)(b)

Section 9(l)(c)

Section 28

Section 29

Section 29(4)

Section 30

Section 30(2)(a)

Section 31

Section 31(1)

Section 35

Section 57

Section 124

Section 124(l)(a)(i)

Section 124(l)(a)(ii)

Section 124(5)

 

HEAD NOTE:

Trade mark – Infringement – Defendant can use descriptive Hindi word to describe their products therefore by use of descriptive word ‘SWAAD’ there is no deception by defendant nor has not been used as a Trade mark . Injunction application dismissed.

Held, word ‘SWAD’/’SWAAD’ is indubitably not a coined word but a common word in Hindi meaning ‘TASTE’ and is thus a descriptive word. Whether a descriptive word or use of a descriptive word can amount to infringement or passing off for a product was considered by Division Bench of this Court in case of Marico Limited v. Agro Tech Foods Ltd. MANU/DE/3131/2010:174 (2010) DLT 279: ILR (2010) Supp. (3) Delhi 402: MIPR 2010 (3) 226: 2010 (44) PTC 736 (Del) Word ‘SWAD’ is a descriptive word and in present case word ‘SWAD’ is not even Registered Trade mark of Plaintiff as two Registered Trade marks are ‘SWADI’ and ‘SWADISHT’. Further Defendant has not used word/mark ‘SWAAD’ as its Trade mark but as a common descriptive adjective. Trade mark of Defendant is ‘ALL SEASONS’ with a tagline ‘SWAAD EVERYDAY RICE’ on its packaging. Moreover tagline is not more prominent than Trade mark. Division Bench in case of Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. and Ors., MANU/DE/2282/2009: 2009 (41) PTC 336 (Del): 2009 (8) AD (Delhi) 350: (2010) ILR 2 Delhi 85: MIPR 2009 (3) 108    upheld observation of Single Judge wherein it was held that, even if Trade mark has acquired a secondary meaning and distinctiveness in relation to traders’ product same does entitle a trader from precluding other traders from using said expression for purposes of describing characteristic features of their product. In present case tagline “SWAAD EVERYDAY RICE” is describing feature of product, that is, its taste. Further word SWAD is not a coined word but is a commonly used word for tasty edible product. Thus, Plaintiff cannot claim any exclusivity to use said mark/word. Division Bench in Marico Ltd. noted with caution that it was possible that a descriptive word/mark on account of its extensive user over a great length of time, when no other person have been shown to use same, becomes a well known Trade mark or a Trade mark which has achieved a distinction by user that, it can be Registered however, same would depend on facts of each case including but not limited to Trade mark, goods in question, customers, use and all other factors and their intense co-relation in each case. Defendant along with written statement has filed documents to show that a number of entities in trade of rice are using name/mark ‘SWAD’/’SWAAD’. Thus, it cannot be held that, by extensive user over a length of time and there being no other person using mark, Plaintiff’s Trade mark ‘SWAD’/’SWADI’/’SWADISHT’ has achieved a distinction. Interim order is vacated.

JUDGMENT

Mukta Gupta, J.

  1. Nos. 7978/2016 (Under Order XXXIX Rule 1 and 2 Code of Civil Procedure) and 573/2017 (Under Order XXXIX Rule 4 Code of Civil Procedure) in CS (COMM) 796/2016
  2. Plaintiff in the present suit inter alia seeks permanent injunction against the Defendant, its servants, agents, distributors etc. from manufacturing, using, marketing, selling, soliciting, displaying, advertising or in any other mode or manner dealing with in or using/representing, displaying the impugned Trade mark/word ‘SWAD’ which was deceptively similar to the Plaintiff’s Trade mark in respect of rice of all kinds and from infringement of its Trade mark ‘SWADI’ and ‘SWADISHT’ registered under Nos. 1143786 and 1143787 respectively in Class-30 besides claiming passing off in respect of its Trade mark ‘SWAD’. Plaintiff claims that its predecessor and family concern namely Paras Trading Company, Naya Bazar, Delhi in January, 1991 conceived and adopted the Trade mark ‘SWAD’ in relation to rice of all kinds. M/s. Paras Trading Company through its partner vide the Deed of Assignment executed on 2nd April, 2012 assigned its several Trade marks, used/Registered and/or pending registration to the Plaintiff. The Plaintiff also claims that the artistic work bearing the title ‘SWAD’ is also registered under No. A-54277 dated 27th October, 1997 under the Copyright Act, 1957 in the name of Plaintiff’s predecessor and the Plaintiff has filed an application for amendment of the said registration in its name. Having successfully used the Trade mark ‘SWAD’, Plaintiff got registration of the Trade marks ‘SWADI’ and ‘SWADISHT’ as noted above. By virtue of the long, continuous and established user coupled with the reputation, the purchasing public and the trade identifies and recognizes the Trade mark ‘SWAD’ indicating the exclusive and quality product of the Plaintiff and none else. Plaintiff has placed on record figures of the sales since the year 2005 for its rice under the brand ‘SWAD’. Plaintiff also claims to be extremely vigilant in safeguarding its interest and rights in the Trade mark ‘SWAD’ and claims that from time to time it has initiated proceedings/taken legal actions against third parties misusing the same and reference in this regard is made to one civil suit being CS (OS) No. 1692/2002 wherein on the parties settling the matter the same was decreed in favour of the Plaintiff. Thus the Plaintiff claims rights both statutory and under common law in the Trade mark ‘SWAD’, ‘SWADI’ and ‘SWADISHT’.

 

 

  1. In the plaint, the Plaintiff further claims that the Defendant has recently started
    representing the word ‘SWAAD’ in respect of its goods, that is, rice manufactured,
    packed and marketed by it which is identically/deceptively and closely similar to
    the Plaintiff’s prior adopted and reputed Trade mark ‘SWAD’ and also deceptively
    and closely similar to Plaintiff’s registered Trade mark ‘SWADI’ and ‘SWADISHT’.
  2. When the suit came up for the first time before this Court on 13th July, 2016 this
    Court passed an ad-interim ex-parte order in favour of the Plaintiff and against the
    Defendant restraining the Defendant, its officers, representatives, distributors, agents,
    assigns from using the impugned Trade mark ‘SWAAD’ or any other mark which
    is deceptively similar to the Plaintiff’s Trade mark ‘SWAD’/’SWADI’/’SWADISHT’
    in respect of rice of all kinds under Class-30 which interim order is continuing.
  3. On service of summons Defendant filed the written statement and an application
    under Order XXXIX Rule 4 Code of Civil Procedure. Thus both these applications
    have been heard together.
  4. In the written statement filed Defendant has taken number of objections including
    that the word ‘SWAD’ is a common word and could not have been Registered as a
    Trade mark besides the word being descriptive about the taste of the product which
    is commonly used by number of companies in different classes as well as in Class-30.
    It is claimed that the word ‘SWAAD’ has not been used as a Trade mark by the
    Defendant but only in a descriptive sense in order to describe the taste of the product.
    It is claimed that the Defendant is selling its rice under the Trade mark “ALL
    SEASONS” and has used the word SWAD in the tagline as “SWAAD EVERYDAY
    RICE” on its packaging and the same has to be read as a whole and not in piecemeal
    Thus in totality there is no deception by the Defendant and it is using the
    word ‘SWAAD’ only to give an impression of the taste. It is further contended that
    ‘SWAD’ is not a coined word and it is a common trade practice in this trade to use
    the word ‘SWAD’ in the packaging. The packaging of the Defendant is in no way
    similar to that of Plaintiff and hence there is no deception. Further till date admittedly
    the Trade mark of the Plaintiff ‘SWAD’ is an unregistered Trade mark and the Plaintiff
    has failed to place on record any document to establish the deceptive similarity in
    the Defendant’s product. The Defendant has also placed on record documents to
    show that many companies dealing with rice are using the word ‘SWAD’ as
    descriptive of the product. In the written statement the Defendant has also challenged
    the validity of the registration of the Trade marks ‘SWADI’ and ‘SWADISHT’ of the
    Plaintiff.
  5. In support of its contentions as noted above, learned Counsel for the Plaintiff
    relies upon the decisions reported as 1992 PTC (Suppl) (1) 470 (Del) Coolways India
    Prince Air Conditioning and Refrigeration and 1993 PTC 75 M/s. F.M. Diesels Ltd.
    M/s. S.M. Diesels, whereas learned Counsel for Defendant relies upon the decision of
    the Division Bench of this Court reported as 186 (2012) DLT 234 Bhole Baba Milk Food
    Industries v. Paml Food Specialties Pvt. Ltd.1 and 174 (2010) DLT 279, Marico Limited v.
    Agro Tech Foods Ltd2

 

 

  1. The word ‘SWAD’/’SWAAD’ is indubitably not a coined word but a common word in Hindi meaning ‘TASTE’ and is thus a descriptive word. Whether a descriptive word or use of a descriptive word can amount to infringement or passing off for a product was considered by the Division Bench of this Court in Marico Limited (supra) wherein it was held:
  2. Two basic issues arise for decision in the present appeal along with incidental and
    related issues. The first issue is on the aspect of infringement i.e. whether the Appellant’s
    registration gives it exclusive right to use the subject Trade marks “LOSORB” and
    “LO-SORB” and consequently whether an action for infringement is maintainable if a
    person such as the respondent uses a Trade mark which is deceptively similar or nearly
    identical or identical to the registered Trade marks. Included in this first issue is the
    aspect of whether registration only confers prima facie validity and thereby does not
    prevent the Court from denying the injunction inspite of registration. Further, assuming
    that registration is final would the Appellant be entitled to the reliefs of injunction with
    regard to its claims of infringement once the Respondent lays out a valid defence under
    the applicable provisions of the Trade marks Act, 1999 (hereinafter referred to as the
    “Act”) which inter alia, include Section 30(2)(a) and Section
    35 thereof i.e. the use of the
    words by the Respondent, which words are claimed by the Appellant as its Trade marks
    are statutorily permissible as the use is only in a descriptive manner. The second issue is
    the issue with regard to claim of the Appellant pertaining to passing off and the issue is
    whether the Respondent’s user of the expression
    “LOW ABOSORB TECHNOLOGY”
    in relation to its edible oil product amounts to passing off the goods of the Appellant
    which rises the unregistered Trade mark “LOW ABSORB”. We also would like to state
    that on quite a few aspects of “passing of” and “infringement” there will be commonality
    of the ratios and thus dovetailing on these common aspects.

PASSING OF ACTION

  1. Since, the second issue is now almost entirely covered by a decision of a Division
    Bench of this Court reported as Cadila Healthcare Ltd. v. Gujarat Co-operative Milk
    Marketing Federation Ltd. and
    Ors.3 2009 (41) PTC 336: 2009 (8) AD (Delhi) 350 we
    shall therefore deal with it first. We are consciously using “almost entirely” because
    there is one major difference in the case of Cadila Healthcare Ltd. (supra) and the
    present case on the issue of passing off being that the products in the case of Cadila
    Healthcare Ltd. of the two parties were different, but in the present case the products
    are identical. The Division Bench in the judgment of Cadila Healthcare Ltd. (supra)
    was concerned with a passing off an action with respect to the Trade mark “Sugar
    Free” which was used by the Plaintiff therein with respect to an artificial sweetener
    acting as a substitute for natural sugar and the Defendant was selling a frozen desert
    with the Trade mark “Amul” and describing its product as “Sugar Free”. The Division
    Bench has held that expression “Sugar Free” is basically a descriptive and generic
    expression. The Division Bench has further held that it cannot be said to be a coined
    word. The Division Bench in effect has held that there cannot an exclusive ownership
    granted to a person with respect to expression “Sugar Free”, i.e., there cannot be claim
    of exclusive user of the expression “Sugar Free” as a Trade mark with respect to all
    other products which were not artificial sweeteners assuming that the Plaintiff may
    have distinctiveness with respect to its Trade mark for artificial sweeteners. The relevant
    paras of the judgment Cadila Healthcare Ltd. (supra) which contain the ratio are para
    Nos. 8 to 11 and 14 which read as under:

 

 

  1. In our view, at this juncture i.e. at the interim stage, even assuming
    distinctiveness claimed by the Appellant in its favor qua its artificial sweetener,
    the Appellant has rightly been declined an injunction by the learned Single
    Judge since it is evident and has indeed been found by the learned Single Judge
    that the use of the term “Sugar Free” by the Respondent is not in the Trade
    mark sense but as a common descriptive adjective. The learned Single Judge
    has found and in our view rightly that the Respondent has not used the
    expression in a Trade mark sense but only in a descriptive sense in the following
    passage:-
  2. It is important to be borne in mind that use of a descriptive expression as a Trade mark by a trader, irrespective of the said Trade mark having acquired a secondary meaning and distinctiveness in relation to the trader’s products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products. I have no hesitation in stating, albeit without prejudice to the rights and interests of the Plaintiff in the present suit, that by adopting such a purely descriptive and laudatory expression “Sugar Free” as its Trade mark, the Plaintiff must be prepared to tolerate some degree of confusion which is inevitable owing to the wide spread use of such Trade mark by fellow competitors. Simply because the Plaintiff claims to be using the expression “Sugar Free” as a Trade mark much prior to the launch of the Defendant’s product Pro Biotic Frozen Dessert in the market does not give this Court a good ground for imposing a blanket injunction on the Defendant from using the expression “Sugar Free”, especially when the Defendant intends to use this expression only in its descriptive sense and not as a Trade mark, and even otherwise, when the use of this expression is widespread in relation to foods and beverages

We fully agree with and reaffirm the said finding.

  1. We are unable to hold that the Appellant’s Trade mark “Sugar Free” is a
    coined word; at best it is a combination of two popular English words. The
    mere fact that the Appellant’s product cannot be directly consumed or eaten
    and merely is an additive does not detract from the descriptive nature of the
    Trade mark. Once a common phrase in the English language which directly
    describes the product is adopted by a business enterprise, such adoption
    naturally entails the risk that others in the field would also be entitled to use
    such phrases provided no attempt is made to ride on the band wagon of the
    Appellant’s indubitably market leading product “Sugar Free”. In this
    connection, merely because the attributes of “Sugar Free” can be described by
    other phrases cannot detract from the common usage of the phrase “Sugar
    Free” as denoting products which do not contain sugar and any trader which
    adopts such mark in the market place, does so with the clear knowledge of the
    possibility of other traders also using the said mark. That is precisely the
    reason for the denial of protection to such marks by refusing registration as
    envisaged by Sections 9, 30(2)(a) and 35 of the Act. The said Sections read as
    follows:
  2. Absolute grounds for refusal of registrar! on.-(1) The Trade marks-

 

  • which are devoid of any distinctive character, that is to say, not
    capable of distinguishing the goods or services of one person from
    those of another person;
  • which consist exclusively of marks or indications which may
    serve in trade to designate the kind, quality, quantity, intended
    purpose, values, geographical origin or the time of production of
    the goods or rendering of the service or other characteristics of the
    goods or service;
  • which consist exclusively of marks or indications which have
    become customary in the current language or in the bona fide and
    established practices of the trade, shall not be Registered:

Provided that a Trade mark shall not he refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known Trade mark.

  1. Limits on effect of Registered Trade mark.-(l) Nothing in Section 29 shall be construed as preventing the use of a registered Trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use-fa) is in accordance with honest practices in industrial or commercial matters, and

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the Trade mark.

(2) A registered Trade mark is not infringed whcrc-

(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;

  1. Saving for use of name, address or description of goods or services.-Nothing in this Act shall entitle the proprietor or a registered user of a registered Trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.

(Emphasis supplied)

Thus, it is dear that the mark or indication which serves to designate the quality of the goods of the Appellant, which indeed the phrase “Sugar Free” does, would be an absolute ground for refusal of registration of a mark unless it has acquired a distinctive character. The expression can at best be said distinctive qua the artificial sweetener of the Appellant and mere starting of the marketing of the drink “sugar free D’lite” cannot give the Appellant the right to claim distinctiveness in the expression “Sugar free” in relation to all the food products.

 

1

  1. The learned Senior Counsel for the Appellant has relied upon a
    plethora of judgments including the decision of the European Court of
    Justice in Baby Dry (supra) to claim that the expression “Sugar Free” is
    a coined word and is distinctive in nature. Apart from the fact that the
    law laid down in the case of Baby Dry is not binding on us, it is also
    relevant to notice that in the said case the Court permitted the registration
    on the basis of the categorical findings that the expression “Baby Dry”
    was a syntactically unusual juxtaposition of two independent English
    words and was not a familiar expression in the English language. In our
    view, the expression “Sugar Free” is neither a coined word nor an unusual
    juxtaposition of two English words especially when such expressions
    are commonly used, both in written, as well as spoken English, for
    example,- “hands-free” (for mobile phones) and “fat free” (for food
    articles) and thus cannot be permitted exclusive use for only the
    Appellant’s product,
  2. The Appellant has relied upon the case of Godfrey Philips India
    (supra) wherein it was held that a descriptive Trade mark may be
    entitled to protection if it has assumed a secondary meaning which
    identifies it witli a particular product or has been from a particular
    source. It is also relevant to mention here the judgment of Home
    Solutions (supra) was also relied upon by the Respondents, wherein it
    was held that “the expression “HOMESOLUTIONS” is inherently
    incapable of becoming distinctive of any single person with respect of
    any single product or service. It is generic and publici juris. It describes
    the nature of services offered.” Thus, in our view, the mark “Sugar
    Free” is inherently incapable of becoming distinctive of the product of
    the Appellant and hence the ratio of Godfrey Philips would thus not be
    applicable. Even if it is assumed that the mark of the Appellant has
    become distinctive qua the artificial sweetener, however, the protection
    to the mark qua the product artificial sweetener cannot be extended to
    all the food products of any competitor in the market.
    We also affirm
    and reiterate the view taken by the learned Single Judge that the
    Appellant’s product is a sweetener/sugar substitute, and siveeteners
    are generally understood in their functional sense, that is, in terms of
    utility when added to foods and beverages. To an average consumer, a
    sweetener is known to exist only when added to food and beverages,
    and its own identity gets merged in the food and beverages to which it
    is added. Thus, the expression “Sugar Free” when used in relation to a
    sweetener may really describe a sweetener in the sense of its generic
    meaning, and what it connotes is the specific nature and characteristics
    of the product.

xxxxxxxxx

  1. In consonance with the above view we are also not in a position to agree with the Appellant that the word “Sugar Free” has become so distinctive of the sugar substitute and has acquired such a secondary meaning in the sugar substitute market that it cannot refer to any other food product except the Appellant’s sugar substituted product labelled “Sugar Free”. There cannot be any doubt that the word “Sugar Free”

 

is not inherently distinctive and is clearly descriptive in nature. In fact, the word “Sugar Free” in essence clearly only describes the characteristics of the Appellant’s product and therefore, cannot afford it the protection sought in the plaint by restraining the Respondent from using the phrase “Sugar Free”. “Sugar Free”, prima facie has not attained any distinctiveness, as alleged by the Appellant outside the field of sugar substitute artificial sweeteners and the Appellant would not be entitled to exclusively claim the user of the expression “Sugar Free” in respect of any product beyond its range of products and the Respondent cannot be restrained from absolutely using the expression “Sugar Free”, particularly in the descriptive sense. A mere descriptive usage of the expression “Sugar Free” by the Respondent may thus blunt the edge of claim of distinctiveness by the Appellant. However, we make it clear that if any party enters into the domain of artificial sweeteners with the Trade mark “Sugar Free” the Appellant may have a just cause in seeking restraint.

(Emphasis has been added by us)

  1. In view of the judgment of the Division Bench in the Cadila Healthcare Ltd. (supra), and with which we respectfully agree, the Appellant in the facts of the present case can have no exclusive ownership rights on the Trade mark “LOW ABSORB”. The expression “LOW ABSORB” is quite clearly a common descriptive expression/adjective. The expression “LOW ABSORB” is not a coined word and at best it is a combination of two popular English words which are descriptive of the nature of the product as held by the Division Bench in Cadila Healthcare Ltd. (supra) case that such adoption naturally entails the risk that others in the field would also be entitled to use such phrases. Low Absorb is not an unusual syntax and the same can almost be said to be a meaningful part sentence or phrase in itself. The expression “LOW ABSORB” surely and immediately conveys the meaning of the expression that something which absorbs less, and when used with respect to edible oil, it is descriptive in that it refers to less oil being absorbed or low oil being absorbed. Similar to the expression “Sugar Free” being not an unusual juxtaposition of two English words the expression “LOW ABSORB” equally is not an unusual juxtaposition of words in that the same can take away the descriptive nature of the expression. The expression “LOW ABSORB” is used in the functional sense for the character of the product viz. edible oil. With respect to the unregistered Trade mark “LOW ABSORB” we are of the firm opinion that in essence the expression “LOW ABSORB” only describes the characteristic of the product edible oil and ordinarily/normally incapable of being distinctive.

We are also of the view that it is high time that those persons who are first of the blocks in using a Trade mark which is a purely descriptive expression pertaining to the subject product ought to be discouraged from appropriating a descriptive expression or an expression which is more or less a descriptive expression as found in the English language for claiming the same to be an exclusive Trade mark and which descriptive word mark bears an indication to the product’s kind, quality, use or characteristic etc. This in our view is in accordance with the spirit of various Sub-sections of Section 9 and Section 30 besides also Section 35 of the Act. The very fact that in terms of Section 9 of the Act, in cases falling therein, there is an absolute

 

ground for refusal of registration of the Trade mark, the same clearly is an indication of ordinarily a disentitlement from claiming exclusive ownership of a descriptive expression as a Trade mark. We are in this entire judgment for the sake of convenience only using the expression “descriptive expression” or “descriptive word” or “descriptive Trade mark” “descriptive” etc. but these expressions are intended to cover cases ivith respect not only to a descriptive word mark used as a Trade mark but to all word marks used as Trade marks which refer to kind, quality, intended use or other characteristics etc. of the goods, and also other ingredients of Section 9(l)(b) and Section 30(2)(a).

The aforesaid observations are made by us mindful of the proviso of Section 9 as per which on account of distinctiveness, the absolute bar against registration is removed, but, we are for the present stressing on the intendment of the main part of the Section and which is to basically prevent descriptive terms from being registered as Trade marks. The proviso no doubt does state that such marks can be registered as a Trade marks, however, the Act itself also contains provisions for cancellation of registered Trade marks including Section 57 whereby registration obtained is cancelled being violative of the applicable provisions of the Act. Our belief is further confirmed by the provision of Section 31(1) which clearly states that registration is only prima facie evidence of the validity of registration. It is only when cancellation proceedings achieve finality of the same being finally dismissed can it be said that a mark for which ordinarily there is an absolute ground for refusal of registration that it has acquired a distinctive character i.e. a secondary meaning or is a well known Trade mark. Section 124 of the Act is also relevant in this regard. Sub-section 5 of Section 124 clearly provides that inspite of registration, the Court before which an action is filed seeking protection of the Trade mark is not precluded from making any interlocutory order it thinks fit in spite of the registration and also the fact that the suit may have to be stayed till decision of the rectification/cancellation proceedings before the Registrar/Appellate Board filed in terms of Section 57 of the Act. This aspect of Section 124(5) and related aspects are dealt in details in the following portions of this judgment. The facts of the present case are not such that a cancellation proceeding has been dismissed and that which dismissal has obtained finality and it cannot be said that the validity of registration has been finally tested.

  1. An important aspect with respect to the issue of passing of is that the Respondent is selling its product with a prominent Trade mark “Sundrop” and which appears on the packaging of the Respondent in a very prominent size, much larger than the size of the expression “LOW ABSORB TECHNOLOGY’. The colour scheme of the respective packaging is also wholly different. Appellant’s colour scheme is orange and the Respondent’s blue. Merely because, the consumers are same and the trade channel same, it cannot be said that in the facts and circumstances of the case, there is a possibility of confusion, because there are more than enough differentiating features on the packaging so as to avoid any issue of the Respondent passing of its goods as that of the Appellant. For the sake of convenience the three packages in colour are reproduced below:

Thus the conclusion of the above is that, even though the two respective products of the parties are identical viz. edible oil, it cannot be said that the Respondent is passing of its goods as that of the Appellant-Plaintiff.

 

 

  1. The question now remains is whether in spite of the Trade mark of the Appellant “LOW ABSORB” being a descriptive Trade mark, has the Appellant established its case at this interlocutory stage of its Trade mark becoming so distinctive that it can claim exclusive right and monopoly in the same by virtue of the proviso to Section 9. There are two important parts of this aspect/issue. The first part is what is the meaning to be ascribed to the expression “distinctive” as found in the proviso to Section 9 and the second aspect is whether the Trade mark of the Appellant has in fact become distinctive.

The word “distinctive” is not directly defined in the Act. However meaning of distinctive is indicated in the definitions of “trade-mark” (Section 2(zb)) and “well known Trade mark” (Section 2(zg). The word has been explained in a plethora of judgments. Distinctive has been explained to mean such use of the Trade mark with respect to the goods of a person that the public will immediately and unmistakably co-relate the mark with the source or a particular manufacturer/owner thereof. The real issue which however arises is what should be the meaning of the expression “distinctiveness” in the situation when the Trade mark is a word mark of descriptive nature. When a Trade mark, which is a word mark, is arbitrarily adapted and is such having no co-relation to the goods in question, then in such a case distinctiveness is achieved by normal and ordinary use of the Trade mark with respect to the goods and it has been repeatedly held that such Trade mark is entitled to the highest degree of protection. However this is not and cannot/should not be so for a Trade mark which is a descriptive word mark. Some colour has to be taken for the word “distinctive” as found in the proviso to Section 9 from the expression “well known Trade mark” which follows the distinctiveness aspect as found in the said proviso. Courts should ordinarily lean against holding distinctiveness of a descriptive Trade mark unless the user of such Trade mark is over such a long period of time of many years that even a descriptive word mark is unmistakably and only and only relatable to one and only source i.e. the same has acquired a secondary meaning. A case in point is the use of “Glucon-D” for 60 years in the recent judgment in the case of Heinz Italia and Anr. v. Dabur India Ltd   (2007) 6 SCC 1. =    MANU/SC/2133/2007: 2007 (4) ALLMR (SC) 777: 2007 (68) ALR 658: 2007 (5) ALT 41 (SC): 2007 (3) AWC 3155 (SC): 104 (2007) CLT 719: 2007 (4) CTC 810: 2007 (6) MhLJ 7: MIPR 2007 (2) 193: 2007 (35) PTC 1 (SC): 2007 (3) RCR (Civil) 365: 2007 (3) RCR (Criminal) 290: 2007 (7) SCALE 608

A period of 60 years is indeed a long period of time and thus distinctiveness of the descriptive word mark used as a Trade mark was accepted, albeit in a tweaked form of the normal descriptive word “Glucose1. Therefore, when the descriptive Trade mark is used only by one person undisturbed for a very long period of time, without anyone else attempting to use the Trade mark during this long period time, a case can be established of a descriptive word having achieved distinctiveness and a secondary meaning.

We must hasten to add that merely because the person first of the blocks in adapting a descriptive Trade mark files legal actions and temporarily prevents or seeks to prevent others from using the descriptive Trade mark cannot mean that there is undisturbed user of the Trade mark. Once others claim a right to the descriptive Trade mark before the end of the long period essential for a descriptive Trade mark to become distinctive then the original user of a descriptive Trade mark cannot ordinarily establish “distinctiveness”.

 

Ultimately everything will turn on the facts of each individual case and in some cases the facts may be wholly clear even at the interim stage of deciding an interlocutory application, in other cases (which are bound to be in a majority) a decision on distinctiveness can only be made after evidence is led by the parties. This is also so held by the Supreme Court in the “Super Cup” case reported as Godfrey Philips India Ltd. v. Girnar Food and Beverages (P) Ltd.5 (2004) 5 SCC 257 that distinctiveness is an issue to be established or examined in the facts of each particular case i.e. the evidence has to be evaluated in the facts of each individual case.

When we turn to the facts of the present case, we find that user is only of about seven years since 2001 and which user even as per the slated sales cannot be said to be such user qua a descriptive expression “LOW ABSORB” that it can be said that the Appellant has got such distinctiveness to claim exclusive monopoly of the same as a Trade mark keeping in mind the observations made above of discouraging appropriation of descriptive words and expressions. Also, the extent of sales i.e. value of sales can sometimes be deceptive in cases such as the present where the Appellant also uses other Trade marks such as “Sweekar” and “Saffola’. It would be a moot point, to be decided after trial, that what is the extent of sales relatable to “LOW ABSORB” only (and even for the Registered marks “LOSORB” and “LOSORB”) and not because of the Trade marks “Sweekar” and “Saffola’. We, therefore, at this stage of interim injunction reject the case of the Appellant that it has achieved such distinctiveness that it can claim the benefit of the proviso to Section 9 with respect to the subject word mark which is a descriptive Trade mark.

  1. The result of the aforesaid is that the learned Single Judge was justified in declining the relief of injunction on the ground of passing off. Additionally as stated by us above, in the facts of the present case there is no question of claiming any exclusive ownership right in the expression “LOW ABSORB” and therefore, consequently, their arises no question of successfully maintaining a passing of action on that basis. There are also other added factors and circumstances, as narrated above, to hold that there is no question of passing of in the present case.
  2. As noted the word ‘SWAD’ is a descriptive word and in the present case the word ‘SWAD’ is not even the Registered Trade mark of the Plaintiff as the two Registered Trade marks are ‘SWADI’ and ‘SWADISHT’. Further Defendant has not used the word/mark ‘SWAAD’ as its Trade mark but as a common descriptive adjective. The Trade mark of the Defendant is ‘ALL SEASONS’ with a tagline ‘SWAAD EVERYDAY RICE’ on its packaging. The tagline is not more prominent than the Trade mark. The Division Bench in Cadila (supra) upheld the observation of the learned Single Judge wherein it was held that even if the Trade mark has acquired a secondary meaning and distinctiveness in relation to the traders’ product the same does entitle a trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their product. In the present case the tagline “SWAAD EVERYDAY RICE” is describing the feature of the product, that is, its taste. Further the word SWAD is not a coined word but is a commonly used word for tasty edible product. Thus the Plaintiff cannot claim any exclusivity to use the said mark/word.

 

 

. In respect of relief of interim injunction qua infringement, the Division Bench in 4arico Limited (supra) held as under:

  1. That takes us to the main issue which was argued in the present case being the first issue of whether the Appellant by virtue of the registrations has got an exclusive right to use the expressions “LOSORB” and “LO-SORB” and is thereby entitled to prevent anyone else from using any Trade mark which is identical or deceptively similar to the Registered Trade marks.

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  1. A reading of the aforesaid sections taken together show that:

A Trade mark is ordinarily used in relation to goods of a manufacturer. A Trade mark can be registered but ordinarily registration is not granted if the mark falls under Sub-sections 1 (a) to 1 (c) of Section 9. The proviso however, provides for entitlement to registration although ordinarily not permissible under Sections 9(l)(a) to (c), provided that the mark has acquired a distinctive character as a result of its use prior to registration or is otherwise a well known Trade mark. Registration is only prima facie evidence of its validity and the presumption of priina facie validity of registration is only a rebuttable presumption, see para 31 of N.R. Dongre v. Whirlpool Corp.61995 (34) DRJ 109 (DB). The right conferred by registration for exclusive use of the Trade mark in relation to goods is if the registration is valid and which flows from the expression “if valid” occurring in Section 28. The expression “if valid” has been inserted for the purpose that post registration an aggrieved person is entitled to apply for cancellation rnder Section 57 of the Act even if no suit is filed alleging infringement of the registered Trade mark. In case a suit is instituted, the Court, once there is already a pending action seeking cancellation of the Trade mark, will stay the suit till the final disposal of the cancellation/rectification proceedings. The Court however is still entitled to, inspite of registration, pass any interlocutory order as it deems fit, including but not limited to, granting the injunction or dismissing the prayer for injunction. If no cancellation proceedings are pending as on the date of filing of a suit for infringement if the Court is satisfied with regard to the plea of invalidity of registration (this language of Section 124(l)(a)(i) co-relates to the expression “if valid” as occurring in Section 28) then the Court may raise an issue in the suit and adjourn the case for three months after framing the issues in order to enable the Defendant to apply to the Appellate Board for rectification of the Register. Even in the circumstances where the Court stays the suit for three months and permits a party to apply for cancellation/rectification, the Court can pass any interlocutory order as it thinks fit under Sub-section 5 of Section 124. In view of the co-relation between Section 28 and different Sub-sections of Section 124, it becomes clear that the entitlement to claim invalidity of registration on the ground of the expression “if valid” as found under Section 28 only arises if the Defendant in his written statement in a suit alleging infringement of a registered Trade mark takes up the plea with respect to registration of Trade mark being “invalid” or has already applied for cancellation of the registered Trade mark before the suit alleging infringement is filed.

Section 29 entitles an action being filed for infringement of a Registered Trade mark against an identical, nearly identical or deceptively similar Trade mark used in relation to the same goods in respect of which the Trade mark is Registered or to similar goods. In case, the Trade mark is not identical and the goods are also not the same for which the Trade mark is Registered, an infringement action will only lie if the conditions of Sub-section 4 of Section 29 are satisfied being of the registered Trade mark having a reputation in India and the use of the registered Trade mark without due cause takes unfair advantage or is detrimental to the distinctive character or repute of the registered Trade mark. Sections 30 and 35 entitle a person to use the registered Trade mark if the conditions mentioned in those sections are satisfied, meaning thereby, inspite of registration, and inspite of the statutory rights conferred by Sections 28 and 29, an owner of a registered Trade mark cannot sue for infringement if the use by the Defendant of the Trade mark falls within the exceptions as carved out under various Sub-sections of Section 30 and Section 35. That this is so becomes absolutely clear from the expressions “nothing in Section 29 shall be construed as preventing the use of the registered Trade mark..” as appearing in Section 30, and “nothing in this Act shall entitle the proprietor or a registered user of a registered Trade mark…” as appearing in Section 35. Included in Section 30, is disentitlement to an infringement action inspite of registration of the Trade mark where the use of the registered Trade mark is in relation to the goods to indicate the kind, quality, intended purpose etc, or other characteristics of the goods. Therefore there are two stages/tiers of defence in an infringement action. The first is for cancellation of registration in terms of Section 57. If the registration is cancelled obviously nothing will survive in the infringement action. The second tier is that even if the registration is valid there are still valid defences as enunciated in Sections 30-35 of the Act which will disentitle the Plaintiff to relief in an action brought for infringement of a registered Trade mark.

  1. In view of the aforesaid legal position, the first issue which arises is whether the learned Single Judge was justified in holding that he was entitled to look into the validity of registration of the Trade mark, of course, we must hasten to add we are doing so and so has the learned Single Judge done, only for the purpose of deciding the interlocutory application for grant or refusal of injunction and as envisaged in Section 124(5).

In the facts of the present case, we find that the injunction application was disposed of at a stage when the Defendant filed an application for vacation of the injunction and no written statement of the Defendant was on record. As already discussed hereinabove, the stage of challenging the validity of registration by the Defendant arises only when the written statement is filed, because it is only in the written statement that the plea of the registration being invalid would be taken up in furtherance of the expression “if valid” as found in Section 28 and also similar language as found in Section 124(l)(a). This also flows from the fact that under Section 31(1) registration is only a prima facie evidence of validity and not conclusive evidence. Registration would only be a conclusive evidence of validity if the rectification/cancellation proceedings filed for cancellation of the registered Trade mark do not finally succeed. We are, therefore of the view that in the facts of the present case since the issue of invalidity of registration is to be taken up only in a written statement for an issue to be framed with respect thereto in terms of Section 124(l)(a)(ii) and the written statement was yet to be filed when the impugned order was passed, where such an issue would/could be raised, the learned Single Judge was justified in looking into the aspect of prima fade validity of the registration of the Trade mark and it cannot be the stand of the Appellant that the plea of invalidity of registration cannot be looked into because there is no such plea in the written statement inasmuch as the written statement was yet to be filed in the suit.

The learned Single Judge was fully entitled to look into the aspect of validity of registration in the facts of the present case by reference to the expression “if valid” as occurring in Section 28 and the related provisions of Section 31 and the different Sub-sections of Section 124. The learned Single Judge applied his mind and considered this issue of prima facie validity of registration of Trade mark for deciding the interlocutory application and which is very much permissible and in fact so provided under Section 124(5).

  1. The Division Bench further examined the prima facie validity of the registration
    in the said case and held that the registration of the Trade mark “LOSORB” and
    “LO-SORB” was prima facie invalid because the said Trade marks basically are
    minor variations of a descriptive expression “LOW ABSORB” which is not an
    unusual juxtaposition of the words in the English language.
  2. In Coohvays India (supra) relied upon by learned Counsel for the Plaintiff this
    Court held that in a passing off action it is to be examined whether the Plaintiff has
    acquired reputation, goodwill in the mark which he is using in trading his goods
    uninterruptedly for quite some time and somebody else is attempting to pass off
    under that mark. However, in the said case this Court was dealing with the Trade
    mark ‘Prince’ which is not a descriptive word but a common noun. Hence the said
    decision cannot have application to the facts of the present case. Even in M/s. FM
    Diesel (supra) this Court was not dealing with a mark which was descriptive in
    nature and described the qualities of the product.
  3. The Division Bench in Marico Ltd. (supra) further noted with caution that it was
    possible that a descriptive word/mark on account of its extensive user over a great
    length of time, when no other person have been shown to use the same, becomes a
    well known Trade mark or a Trade mark which has achieved a distinction by user
    that it can be Registered however, the same would depend on the facts of each case
    including but not limited to the Trade mark, goods in question, customers, use and
    all other factors and their intense co-relation in each case. The Defendant along with the written statement has filed documents to show that a number of entities in the trade of rice are using the name/mark ‘SWAD’/’SWAAD’. Thus, it cannot be held that by extensive user over a length of time and there being no other person using the mark, Plaintiff’s Trade mark ‘SWAD’/’SWADI’/’SWADISHT’ has achieved a distinction.
  1. In view of the discussion aforesaid interim order dated 13 th  July, 2016 is vacated. Application being IA. No. 7978/2016 (Under Order XXXIX Rule 1 and 2 Code of Civil Procedure) is dismissed and IA. No. 573/2017 (Under Order XXXIX Rule 4 Code of Civil Procedure) is disposed of.

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